Ex Parte Herman

Board of Patent Appeals and Interferences

Jun 7, 2012

10995616 (B.P.A.I. Jun. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/995,616 11/23/2004 Michael Herman P/4604-3 5268
2352 7590 06/08/2012
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
WALKER, KEITH D
ART UNIT PAPER NUMBER
1726
MAIL DATE DELIVERY MODE
06/08/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL HERMAN
____________

Appeal 2011-002997
Application 10/995,616
Technology Center 1700
___________

Before TERRY J. OWENS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002997
Application 10/995,616

2
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting
1) claims 2, 4, 5 ,7, and 19 under 35 U.S.C. § 102 (b) as
anticipated by Abe (US 2002/0070704 A1, published Jun.
13, 2002);
2) claims 2, 4, 6, 7, 19 and 20 under 35 U.S.C. § 102 (b) as
anticipated by Ronning (US 6,423,441 B1, issued Jul. 23,
2002); and
3) claim 3 under 35 U.S.C. § 103(a) as unpatentable over Abe.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 19 is illustrative of the subject matter on appeal:
19. A battery comprising:
a body having at least a positive terminal and a negative terminal,
the body being shaped and configured to be grasped by a human hand,
the positive terminal including a screwdriver tip formed thereon, and
configured such that the body portion and the screwdriver tip work in
combination as a screwdriver.

Independent claim 20 is similar to claim 19 and recites a battery with
a body and screwdriver tip that work in combination as a screwdriver (see
Claims Appendix.)

MAIN ISSUE ON APPEAL
Appellant does not separately argue the claims in each group rejected
under § 102 (b) (see Br. 4-6). Thus we shall focus on claim 19 as
representative in each of these rejections. The main issue on appeal is the
same for each rejection, namely:
Appeal 2011-002997
Application 10/995,616

3
Did the Examiner reversibly err in finding that the claimed battery
apparatus is anticipated by Abe or Ronning, because, as alleged by
Appellant, neither battery of Abe or Ronning has a “screwdriver tip” (Br. 4,
5); the battery of Abe or Ronning is not “shaped and configured to be
grasped by a human hand” (id.); and neither battery is capable of working
“as a screwdriver” (Br. 4-6)?
We answer this question in the negative, and affirm the rejection.
PRINCIPLES OF LAW
It is well established that “apparatus claims cover what a device is, not
what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990). See also In re Danly, 263 F.2d 844, 848
(CCPA 1959) (“Claims drawn to an apparatus must distinguish from the
prior art in terms of structure rather than function.”); In re Gardiner, 171
F.2d 313, 315-16 (CCPA 1948) (“It is trite to state that the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof.”).
Although “[a] patent applicant is free to recite features of an apparatus
either structurally or functionally[,] . . . . choosing to define an element
functionally, i.e., by what it does, carries with it a risk.” In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner establishes a
reasonable belief that a property or characteristic recited in the claims would
have been inherent to the apparatus, the burden of proof shifts to Appellant
to show that this characteristic or property is not possessed by the prior art.
Id.
Appeal 2011-002997
Application 10/995,616

4
ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we will sustain the Examiner’s rejections for
essentially those reasons expressed in the Answer, including the Response to
Argument section, and we add the following primarily for emphasis.
In reviewing the relevant facts of this case, we agree with the
Examiner that there is a reasonable belief that the battery of either one of
Abe and Ronning would have been capable of being grasped by a human
hand and working “as a screwdriver” (Ans. 6).
As pointed out by the Examiner, the structurally similarity of an
individual battery of Abe’s to Appellant’s battery as disclosed and claimed is
apparent in that the positive terminal of Abe is shaped as a hexagonal tip
which is expressly disclosed as an appropriate shape for the screwdriver tip
(Ans. 6; Spec. [0031]). Likewise the slot-shaped tip of each battery of
Ronning is expressly disclosed by Appellant as an appropriate shape for the
screwdriver tip (Ans. 7; Spec. [0031]). The Examiner’s position that
the individual battery of either reference would encompass a size and shape
that may be grasped by a human hand is also reasonable (e.g., Ans. 4, 5).
Thus, it is reasonable to believe that the battery of each reference has
the capability to function as recited in each claim. See, e.g., In re Schreiber,
128 F.3d at 1478.
In sum, the battery of either Abe or Ronning appears reasonably to
have the capability of being grasped by a human hand and functioning as a
screwdriver as recited in claim 19. Thus, the burden shifts to Appellant to
prove that the battery is not capable of functioning as recited in the claim. In
re Schreiber, 128 F.3d at 1478.
Appeal 2011-002997
Application 10/995,616

5
Appellant has provided no credible evidence, or any persuasive line of
technical reasoning, explaining why the battery of Abe or Ronning does not
have the claimed capabilities (see generally Br.; no Reply Brief has been
filed). Thus, Appellant has not persuasively argued that the facts and
reasons relied on by the Examiner are insufficient to establish a prima facie
case of anticipation.
In light of these circumstances, the preponderance of the evidence
supports the Examiner’s § 102 rejections. Accordingly, we sustain the § 102
rejections of the claims on appeal.
With respect to the § 103 rejection of claim 3, Appellant has not
provide any persuasive technical reasoning or credible evidence to refute the
Examiner’s reasonable determination that to select any one of a number of
conventional battery sizes as recited therein would have been prima facie
obvious to one of ordinary skill in the art (Br. 6; Ans. 9).
DECISION
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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